WIPO ARBITRATION AND MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd / David Howell / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Angelo Lifrico
Case No. D2015-0436
1. The Parties
The Complainants are Vodafone Group PLC of Newbury, Berkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), Vodacom (Pty) Limited of Midrand, South Africa, Vodacom Group Limited of Midrand South Africa, represented by Boult Wade Tennant, United Kingdom.
The Respondents are Vodacom Ltd of Bourgas, Bulgaria / David Howell of Poulton le Flyde, Lancaster, United Kingdom / Domain Admin, Privacy Protection Service INC d/b/a, PrivacyProtect.org of Nobby Beach, Queensland, Australia / Angelo Lifrico of Arrezzo, Italy.
2. The Domain Name and Registrar
The disputed domain name <vodacom-worldwide.com> is registered with Launchpad.com Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2015. On March 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents' contact information in the Complaint. The Center sent an email communication to the Complainants on March 13, 2015, providing the registrant contact information disclosed by the Registrar, and inviting the Complainants to submit an amended Complaint. The Complainants filed an amended Complaint on March 18, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 9, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on April 17, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On March 26, 2015, Complaints filed an addendum to the Complaint informing that they received an email from a person named "Paul" using one of the email addresses provided for the Respondents. An offer to release the disputed domain name was enclosed in that correspondence in return for the payment of GBP 20,000.
4. Factual Background
The Complainants are Vodafone Group PLC ("Vodafone") a worldwide operator in mobile communications, on the one hand, their subsidiaries Vodacom (Pty) Limited and Vodacom Group Limited, on the other hand. Vodacom Group Limited is one of the largest cellular communications providers in sub-Saharan Africa.
The Complainants are the registered holders of numerous trademark registrations for VODAFONE in the United Kingdom, and Community Trade Mark (CTM) registrations for VODAFONE, which includes Bulgaria.
The Complainants also own trademark registrations for VODACOM in the United Kingdom and in various countries in Africa.
The Complainants' first trademark registrations for VODAFONE and VODACOM were granted in 1990.
In this case, there are four named Respondents: Vodacom Ltd.; David Howell; Privacy Protection Service INC d/b/a Privacy Protect.org; and Angelo Lifrico.
Mr. Lifrico is the current registrant of record of the disputed domain name according to the Registrar's WhoIs database.
However, Mr. Howell seems to be the sole owner of Vodacom Ltd, while Privacy Protect.org is merely a proxy service.
The disputed domain name was registered on August 7, 2014. It resolves to a commercial website operated by the Respondent Vodacom Ltd., offering voice over IP ("VoIP") services.
The Complainants request that the disputed domain name be transferred to the Complainant Vodafone Group PLC.
5. Parties' Contentions
The Complainants first contend that the disputed domain name is confusingly similar to their trademarks based on the following facts:
- The mere incorporation of a trademark in its entirety in a domain name can be sufficient to establish identity or confusing similarity, here the Complainants' earlier trademark registrations are wholly contained within the disputed domain name;
- The inclusion of the geographical term "worldwide" is insufficient to distinguish the disputed domain name from the Complainants' trademarks. Here, the Complainants directly refer to Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell, WIPO Case No. D2014-0740 (concerning <vodacom- europe.com>) dated July 15, 2014. In that case involving essentially the same parties, it was indeed stated that "the inclusion of the geographic term 'Europe' in the disputed name insufficient to distinguish it from the Complainants' marks";
- Due to the established reputation of the Complainants in the telecommunications industry and for their mobile services offered under the mark VODACOM throughout Africa specifically, Internet users will believe there to be a real connection between the disputed domain name and the Complainants and/or their goods and services. Consumers will consider "Vodacom-Worldwide" as either being an extension of the Complainants' extensive mobile services currently offered in Africa under the VODACOM mark, or as being the overarching brand of which the Complainants' activities in Africa are a subset.
The Complainants also claim that the Respondents have no rights or legitimate interests in respect of the disputed domain name, and rely on the following facts:
- The Respondents have no connection with or affiliation to the Complainants and have not received any express or implied license or authorization to use the VODACOM or VODAFONE trademarks;
- The Respondents do not hold any registrations for the VODACOM or VODAFONE marks in Bulgaria (where the Respondents are established), in Africa, in the United Kingdom or anywhere else in the world;
- The Complainants' registered trademark rights predate August 7, 2014, the date of the disputed domain name's registration, and October 9, 2012, the date the First Respondent was incorporated in Bulgaria as Vodacom Ltd;
- The Respondents are providing an identical service to the Complainants' services (voice over IP Services), at least since February 3, 2015, and as the Complainants are well-known in this sector for offering identical services under the VODAFONE and VODACOM marks, the Respondents could not legitimately choose to register the disputed domain name for the online provision of such goods and services unless seeking to create an impression of an association with the Complainants;
Lastly, the Complainants assert that the disputed domain name has been registered and is used in bad faith, on the basis of the following facts:
- Given the fame of the Complainants' marks, it is inconceivable that the Respondents were not aware of the Complainants or their activities when the disputed domain name was registered on August 7, 2014. This is especially the case where this registration came after two of the Respondents had been made aware of a UDRP Complaint concerning a highly similar domain name, <vodacom-europe.com> (See Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell supra), a complaint which fully particularized the Complainants' rights and reputation;
- The disputed domain name is being used to advertise and offer VoIP services under the VODACOM mark.
The Respondents did not formally reply to the Complainants' contentions.
However, the Complainants provided copy of an email communication, received from Mr. Howell on March 20, 2015, in which the Respondents made an offer to transfer the disputed domain name <vodacom worldwide.com> and stop any use of the name "Vodacom" for consideration of payment of GBP 20,000.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Preliminary issue regarding Respondent identity
In the present case the disputed domain name was registered in the name of a proxy service (PrivacyProtect.org) which is providing services to the registrant allowing him to remain anonymous.
According to the statements made by the Complainants, based upon their correspondence prior to the filing of this complaint and the previous UDRP case essentially involving the same parties (See Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell supra), and also the correspondence sent by Mr. Howell to the Complainants during the course of the proceedings, it clearly appears that the person who exercises practical control over the disputed domain name is Mr. Howell.
Mr. Howell being the sole owner of the VODACOM Ltd company, and the disputed domain name being used to resolve to the website of that company, the Panel will consider Mr. Howell and Vodacom Ltd as a single Respondent in this case. Notwithstanding the above regarding the practical control over the disputed domain name, the Panel notes that the registrant of record of the disputed domain name, as confirmed by the Registrar is "Angelo Lifrico", who has been included as a named respondent for all administrative purposes of this decision. Based on the evidence before the Panel, there have been no direct communications between the Complainant and Mr. Lifrico.
B. Identical or Confusingly Similar
The Complainants show prior rights in the trademarks VODAFONE and VODACOM. Those trademarks are registered and used in numerous jurisdictions, notably where the Respondents are established.
VODAFONE has been also recognized as a well-known trademark in prior decisions, some of which are cited by the Complainants. See, for instance, The Vodafone Group Plc v. Brendan Conlon, WIPO Case No. D2002-0822; "The Panel agrees with the Complainant that by virtue of the Complainant's many trademark registrations and extensive use, the trademark VODAFONE is well known and distinctive."
The Panel accepts the Complainants' assertion that the disputed domain name is confusingly similar to the Complainants' trademarks as the disputed domain name <vodacom-worldwide.com> includes the dominant element "vodacom", which is identical to the Complainants' registered trademark VODACOM.
The disputed domain name combines the Complainants' VODACOM mark with the term "worldwide"; such a combination of a descriptive term with a mark does not prevent a domain name from being found confusingly similar, especially when the trademark holder is operating business worldwide as in the present case. See DreamWorks Animation LLC v. Phivos Morides/ Phoebus Morides, WIPO Case No. D2012-0054.
Furthermore, the addition of the generic Top-Level Domain ("gTLD") ".com" does not distinguish the disputed domain name from the Complainants' mark.
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainants' trademarks in which the Complainants have rights, and therefore the conditions of paragraph 4(a)(i) of the Policy is fulfilled.
C. Rights or Legitimate Interests
The Panel, consistent with the consensus view of prior UDRP panels, finds that the Complainants may establish that the Respondents have no rights or legitimate interests in respect of the disputed domain name by making a prima facie showing that the Respondents lack rights or legitimate interests.
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the Complainants' assertions, unchallenged by the Respondents, it is clear that the Respondents do not have any rights or legitimate interests in the disputed domain name.
The Respondents do not have any connection or affiliation to the Complainants, and they have not been granted any authorization to use the trademarks VODAFONE and VODACOM, taking into account the fact that the Respondents are offering services that are identical to those of the Complainants.
Considering that the disputed domain name was registered on August 7, 2014, some weeks after the Center notified the decision in the above-cited case Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell supra, on July 15, 2014, concerning <vodacom-europe.com>, essentially involving the same parties, the panel does not find any use of the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary, The Respondents have certainly tried (once again) to take profit from the marks and reputation of the Complainants.
The Panel finds that the Complainants have established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name, and that the Respondents in failing to formally reply have not rebutted such prima facie case.
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and so the Complainants have satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
The Complainants must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b):
(i) Registering the disputed domain name primarily to sell it for more than documented out-of-pocket costs;
(ii) Registering the disputed domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct;
(iii) Registering the disputed domain name primarily to disrupt the business of a competitor;
(iv) Using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement;
First, the Respondents obviously are aware of the Complainants' trademark registrations on VODACOM and VODAFONE in consideration to their reputation.
They are certainly aware of the Complainants since they have been involved in the above-cited case (Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell supra) concerning a very similar domain name (<vodacom-europe.com>) and were ordered to transfer that domain name in highly similar circumstances.
The Panel notes that a month after that decision, as soon as the domain name <vodacom-europe.com> was transferred to the Complainants, the Respondents registered the disputed domain name, to operate the same website.
Such behavior falls squarely under the Policy in terms of bad faith registration and use, without any further consideration, even if it may be underlined that the Respondents also offered the disputed domain name for sale spontaneously to the Complainants for an amount that is far in excess of the documented out-of-pocket costs.
The Panel therefore finds that the Respondents registered and have been using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vodacom-worldwide.com> be transferred to the Complainants.
Date: May 15, 2015